Appeal No. 2000-0137 Page 11
Application No.08/646,558
the broad claims. See, e.g., the Examiner’s Answer, page 5 (“The originally
disclosed species Phe or Tyr would not provide support for the now broad[ly]
claimed ‘any aromatic residue.’”) and page 6 (“The specification fails to provide
enabling disclosure commensurate in scope with the broad[ly] claimed cyclic
peptides having amino acid structure comprising or attach[ed] to the recited
tetrapeptide.”). The examiner has not explained with particularity why the
specific peptides of claims 37-39, 41, 60, and 61 or the small genera of peptides
recited in claims 35, 53-55, and 57-59 are not adequately described or enabled,
or are rendered obvious by the prior art. Therefore, to the extent they were
included in the rejections on appeal, the rejections of claims 35, 37-39, 41, 53-55,
and 57-61 are vacated.
Other Issues
In the time since the appeal in this case was briefed, Appellants have
been issued a patent claiming subject matter that appears to overlap the subject
matter of the instant claims. See U.S. Patent 6,087,330. On return of this case,
the examiner should consider whether the claims of this case are patentably
distinct from those of Appellants’ ‘330 patent. If they are not, a rejection for
obviousness-type double patenting would be appropriate in the absence of a
terminal disclaimer.
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